Archive for July, 2010

As I noted earlier this week, the USPTO has now published new guidance on how to determine patent-eligibility under 35 U.S.C. 101 in view of the opinion by the Supreme Court in Bilski v. Kappos, 561 U.S. ___ (2010). (USPTO Interim Guidelines for Patent Eligibility) Interestingly, the guidance is specifically for method claims and presumably does apply to the other categories of Section 101 subject matter — machines, manufactures, and compositions of matter: “This Interim Bilski Guidance provides factors to consider in determining subject matter eligibility of method claims in view of the abstract idea exception.”

In addition, the USPTO notes the guidance “does not constitute substantive rule making and hence does not have the force and effect of law” and that “any perceived failure by Office personnel to follow this guidance is neither appealable nor petitionable.” As such, rejections will continue to be based upon the substantive law, and it is these rejections that are appealable.

Commissioner Stoll recently posted to Director Kappos’ blog some facts about RCE Filings. He reports, among other things, that the overall average RCE filing rates have not changed significantly in the last year and that some of the RCE information circulating publicly is incorrect. Commissoner Stoll reports the latest figures for RCE filings: in FY 10, 114,183 RCE applications have been filed through July 12, 2010. This represents 31.2% of total UPR (Utility, Plant, and Reissue application) filings. Commissioner Stoll also notes that when compared with 110,183 filings over the same period in FY09 and 138,459 filings for all of FY09, it is apparent that the average RCE filing rate has remained fairly constant.

Commissioner Stoll’s post also notes some interesting progress in PTO productivity and indications that the examining corps is working more efficiently with practicioners. This includes:

1) Actions per disposal are down substantially – from over 2.9 in FY 2008-2009 to currently under 2.4.

2) Productivity in July is up by 3.5 percent over the same time last year–386,147 total PUs (production units*) versus 373,170 PUs.

3) Allowances have increased from 136,228 last year at this time to 178,322 this year.

4) Final rejections are up too, with 203,206 final rejections so far this year, compared to 189,202 for the same period in FY09.

5) Interviews, too, are projected to increase by about 60 percent from last year.

This is very good news. Commissioner Stolls blog posting is well worth reading in full as it contains a number of other excellent statistics and observations.

The USPTO has published its new guidance on patent eligibility in light of the US Supreme Court’s Bilski decision. The interim guidelines are found in a notice in the Federal Register titled “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos.” Public comments are invited by September 27. I will post comments on these new interim guidelines soon.

My thanks to Bill Bennett from Prizzeys law firm in Australia for this update on business method patents in Australia. As explaind in more detail below by Mr. Bennett, the subject case has qualified the “physical effect” requirement in Australia (which is akin to the “machine or transformation” requirement in the US) by now making it clear that the physical effect must be “central to the purpose or operation of the claimed process or otherwise arises…in a substantial way”. In Australia, the physical effect rule requires that a method must produce “a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation”. The Grant decision (Grant v Commissioner of Patents [2006] FCAFC 120) in which this proposition is set forth, also said that a change in the state or memory of a computer may be a “physical effect”. This post is worth reading to see how Australia is grapping with the issue of what to do with “abstract” business inventions that are implemented in “physical” computing systems, an issue that was not addressed by Bilski due to the fact that none of the claims at issue were computer implemented.

In my last post I discussed how claim 1 in the Ex Parte Birger case had a number of arguably “abstract” elements. I was wondering how difficult it might be be re-draft the claim to eliminate some of the abstract elements or at least introduce enough machine components to get it through the Section 101 keyhole, so I took a shot at it. I did not have time to undertake a complete restructuring of the claim, but I think I did manage to buck up its machine components. Also, I did not have time to study the disclosure to make sure the substance of the claim is completely correct, so please forgive any errors in that respect. Most interestingly, in digging into this claim just a bit I realized that it was a struggle to claim a machine or process in concrete terms when trying to claim an invention that is described or defined in terms of an abstract “model” such as the OSI model and the Internet Protocol Suite (TCP/IP) model, wherein the invention is defined for example in terms of “layers” and “protocols” and “processes” that do not include a specific physical layer/structure. Also note that I am not sure the proposed claim amendments are supported by Birger’s disclosure.

Here is my shot at a more “machine-like” form of claim 1 from Ex Parte Birger:

1. (Amended) A method for communicating between a first and second electronic device over a computer network, the method comprising the first electronic device using a machine-readable global address of the second device to communicate with the second endpoint, wherein:

the machine-readable global address includes machine-readable data specifying a protocol, a network identifier, and an address meaningful for the combination of the protocol and a network identified by the network identifier, wherein the protocol defines a process used to exchange information between electronic devices;

an application comprising machine-readable computer instructions executable on a computing device to send machine-readable messages directed to the second device through an identity-based communication layer that is situated between a network layer and an application layer, the messages being independent of the protocol, wherein the communication layer, network layer and application layer each comprise at least one computer-implemented process to communicate machine-readable data over the network; and

the identity-based communication layer including at least one process for transmitting the machine-readable messages to the second device using the protocol, the network, and the address specified by the global address.

In Ex Parte Birger the BPAI has knocked out another set of claims under Section 101. (See link below for a copy of some selected papers from the case.) For example claim 1, which was singled out as “representative” by the Board, was rejected for a litany of reasons under 101 (“claimed invention is directed to software per se, abstract ideas, abstract concepts, and the like, including data per se, data items, messages, addresses, identities, data structures, software layers, software applications, software protocols, and the abstract intellectual processes associated with them within the claims on appeal”). Generally, I see the Board’s point, but its not quite an open and shut case — I can see that some of the claim limitations are more conceptual/abstract in nature than “machine-like”, but on the other hand some of the components are arguably more machine-like in nature. See claim 1 below with my comments about whether the element is “abstract” or “machine” in brackets:

1. A method for communicating [abstract] between two endpoints [abstract unless defined as apparatus in specification] connected to a network [machine], the method comprising having a first endpoint use a global address [again, if “global address” is interpreted as electronic/machine-readable data, then this is arguably “tangible data”, but if not interpreted as electronic data, then it can be “abstract data”] of a second endpoint to communicate [again, if communication is deemed electronic over a “machine” network, then “communication” can be viewed as tangible v. abstract] with the second endpoint, wherein:

the global address specifies a protocol [could be viewed as “tangible” if it is defined in specification as a tangible machine-readable data sequence or organization, or abstract if not], a network identifier [same analysis as for “global address”], and an address meaningful for the combination of the protocol and a network identified by the network identifier,

an application [this is abstract if it is not specified to be executing on a computer] sends messages [these could be viewed as tangible electronic data traffice] directed to the second endpoint through an identity-based communication layer [could either be viewed as abstract or “tangible data” depending on how described] that is situated between a network layer [could be either machine or abstract depending on how disclosed] and an application layer [again, same thing], the messages being independent of the protocol, and

the identity-based communication layer transmits the messages to the second endpoint using the protocol, the network, and the address specified by the global address [again, if “message” is interpreted as phyiscal, electronic data, and the network as a “machine”, then this should be not be abstract].

I will have more analysis on this later, but for now I think attorneys should take care to describe and claim inventions such as that described in Birger’s claim 1 from the point of view of describing the electronic operation of machine/circuit components as opposed to describing the invention from a conceptual software perspective wherein the machine operation is largely opaque to the programmer or user. In this case, I think the claims are lot more abstract/conceptual than concrete, machine-like, at least if you give the suspect claim terms their more abstract meanings. I think the problem that many of us are going to have is reverting back to describing and claiming inventions at this level of operational detail having been able to use the more conceptual block diagrams and flow charts we are used to under a less exacting application of Section 101’s prohibition on abstract inventions.

The BPAI has wasted no time in applying the newly reinvigorated prohibition on patenting abstract ideas following the Bilski decision, finding the claims in Ex Parte Proudler nonstatutory under Section 101. I have attached a copy of the application and the appeal briefs which include a full listing of the claims. The Proudler abstract described the invention as follows:

“A method of controlling the processing of data is provided comprising defining security controls for a plurality of data items, and applying individualised security rules to each of the data items based on a measurement of integrity of a computing entity to which the data items are to be made available. (Abstract, Fig. 3).”

Depending on how you look at the claims and how much “structure” you read into them as inherent you can view the 101 rejection, as to at least some claims, either as an overly aggressive application of the “abstract idea” prohibition or as justified based on how nebulous the claim language is — i.e., one could arge that the claims at best mixabstract data processing concepts and tangible data processing steps and structure.

For example, take claims 1, 33 and 50:

1. A method of controlling processing of data in a computer apparatus, wherein the data comprises a plurality of usage rules for a plurality of data items stored by said computer apparatus, and comprising:

applying individualised usage rules to each of the data items based on a measurement of integrity of a computing entity to which the data items are to be made available, said data items being logically grouped together as a set of data items, and

instantiating the set of data items at the computing entity depending upon the integrity of the computing entity and the usage rule applicable to each data item in said set.

33. A method of controlling processing of data, wherein the data comprises a plurality of rules associated with a plurality of data items comprising a set of logically related data items, each data item in the set having a rule associated therewith, said rules acting to individually define usage and/or security to be observed when processing each of the data items in the set of data items, and in which forwarding of the set of data items is performed in accordance with mask means provided in association with the rules.

50. A computer apparatus for controlling processing of data, wherein the data comprises a plurality of usage rules for a plurality of data items stored by said computer apparatus, said computer apparatus controlling instantiation of the data at a computing entity, said computer apparatus including:

programming for applying individualised usage rules to each of the data items based on a measurement of integrity of the computing entity to which the data items are to be made available, said data items being logically grouped together as a set of data items, and

programming for individually instantiating data items in the set of data items at the computing entity as a function of the integrity of the computing entity and the usage rule applicable to each data item in said set.

Here is what the BPAI said about claims 33 and 50:

“This brief analysis is clearly seen from representative independent claim 33 on appeal. The manner in which the so-called “computer apparatus” of the preamble of independent claim 50 is recited in the body of this claim is characterized as directly reciting in its two clauses “programming for” achieving a certain abstract functionality. Thus, no true hardware structure is recited. The Specification at page 4, lines 19 and 20, also indicates that a “computing entity, either hardware or software, is often called a ‘node’ and this term will appear here and after.” In view of this assessment, the broadly recited “computer apparatus” in independent claim 50 is additionally recited in independent claim 1 on appeal and must be construed in like manner. Corresponding abstract functionalities are recited in all of these independent claims.

With this background in mind, all claims on appeal, claims 1-43, and 50, are rejected under 35 U.S.C. § 101 as being directed to nonstatutory subject matter. Consistent with our earlier noted invention statement from Appellants’ disclosed abstract, the disclosed and claimed invention is directed to software per se, abstract ideas, abstract concepts, and the like, including data per se, data items, data structures, usage rules, and the abstract intellectual processes associating them within the claims on appeal. ”

In addition, here is what Proudler has to say on the law of Section 101:

“Statutory Subject Matter

The subject matter of claims permitted within 35 U.S.C. § 101 must be a machine, a manufacture, a process, or a composition of matter. Moreover, our reviewing court has stated that “[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter. If the claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009). This latter case held that claims directed to a “paradigm” are nonstatutory under 35 U.S.C. § 101 as representing an abstract idea. Thus, a “signal” cannot be patentable subject matter because it is not within any of the four categories. In re Nuijten, 500 F.3d at 1357. Laws of nature, abstract ideas, and natural phenomena are excluded from patent protection. Diamond v. Diehr, 450 U.S. at 185. A claim that recites no more than software, logic or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Significantly, “Abstract software code is an idea without physical embodiment.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). The unpatentability of abstract ideas was confirmed by the U.S. Supreme Court in Bilski v. Kappos, No. 08-964, 2010 WL 2555192 (June 28, 2010).”

For the purpose of highlighting the difference between what I term tangible data vs. abstract or intangible notions of data, I will parse claim 33:

“A method of controlling processing of data,” — so far this looks like statutory subject matter, but is “processing” restricted to a computer, or can it be paper and pencil or in the mind, i.e., abstract?

“wherein the data comprises a plurality of rules” — question: is the “data” a plurality of rules, or does it represent a plurality of rules, or is the data even electronic, or just data floating in the ether?

“associated with a plurality of data items comprising a set of logically related data items” — note again that these “data items” are not expressly limited to electronic data, or even more particularly electronic data represented by the electrical state of a machine, and therefore arguably “abstact” unless you deem this as inherent in the limitation

“, each data item in the set having a rule associated therewith,” — note again that the “rules” are simply stated as abstract notions, not as being represented by electronic data in the system

“said rules acting to individually define usage and/or security to be observed when processing each of the data items in the set of data items,” — again, no tangible data recited – just abstract notions of functionality not tied even to electronic data, much less machine functionality

“and in which forwarding of the set of data items is performed” — here again the term “forwarding” is not tied to any actual machine operation and is just an abstact statement of function,

“in accordance with mask means provided in association with the rules.” — here the “mask means” gets closer to requiring structure if you read the limitation to cover the “system” components described in the specification, and you believe the system components include both hardware and software.

But in any event, you can see that much of this claim is arguably referring to abstract data floating in the ether as opposed to tangible electronic data being stored and processed in a computing system. (On the other hand, if you look at In re Nuijten, the Federal Circuit was willing if not anxious to read physicality into the term “signal” even though no such express limitation was present.)

This posting is from Director Kappos’ blog on June 28. The tips offered are excellent and I agree with them all 100%. A set of clear, compact and targeted (not overly broad) claims makes for much greater efficiency for both examiners and attorneys. Here is the posting:

Ten Tips for Streamlining Patent Prosecution

I wanted to follow up on one of my blog postings from a few months ago about ways applicants and examiners can streamline the patent prosecution process. The blog posting contained a “Top 5” list that appeared in IPLaw 360 in an article entitled “Five Things Patent Examiners Wished You Would Do.” The article was based on an interview with three Supervisory Patent Examiners (SPEs): David Ometz, John Cottingham and Andrew Koenig.

At the end of my posting I invited comments from our examining corps about expanding this “Top 5” list to a “Top 10” list of tips for improving patent prosecution. There were dozens of comments and suggestions offered, and we have consolidated these comments into a “Top 10” list that I want to share with you. Obviously, some of the items that appeared in the “Top 5” list are included in the new list, but thanks to many fine comments, the original “Top 5” have been refined and 5 more have been added. Here is the list:

1) CONDUCT INTERVIEWS: Set up interviews when possible. Interviews can help applicants and examiners quickly identify points of agreement as well as points of disagreement. An interview will help advance prosecution and provide an opportunity to facilitate a possible early allowance.

2) KEEP CLAIMS MANAGEABLE: Avoid filing excessive numbers of claims. Filing a manageable number of claims will enable the examiner to enhance prosecution by directing examination efforts at the heart of applicants’ invention.

3) PROVIDE GOOD TRANSLATIONS: Do a careful job of translating foreign-language applications into English before filing an application in the United States. Poorly translated applications often result in undesirable lengthy prosecution resulting from lack of clarity arising from indefinite claim language or unclear wording in the specification.

4) CLEARLY IDENTIFY NEW LIMITATIONS: When adding new limitations to claims during prosecution, include a brief section in the remarks citing the location in the specification or drawings that provides support. This will eliminate unwarranted new matter rejections under Section 112 and assist the examiner in better understanding the meaning of the claims.

5) FILE THOROUGH RESPONSES: Take care to ensure that your response addresses the specific issues set forth in the examiner’s office action. Responses or amendments that fail to address the issues in the office action unduly extend prosecution.

6) ADVANCE AMENDMENTS/ARGUMENTS EARLY: File arguments and amendments at the earliest stage of prosecution, and prior to a final rejection if at all possible. Amendments submitted after final are more difficult to deal with procedurally, are not automatically entered, and extend prosecution.

7) COORDINATE US/FOREIGN APPLICATIONS: Draft or amend your U.S. application in view of the prosecution in a corresponding foreign or international application. Success of the Patent Prosecution Highway (PPH) shows that applications drafted or amended in response to search reports and patentability opinions in corresponding foreign or international applications have a much higher allowance rate and shorter prosecution.

8) DRAFT CLAIMS TOWARD THE INVENTION: Know what you want to protect before you file the application and draft the claims toward the invention. If the claim set is not initially drafted to capture the protection needed or desired by the applicant, the examiner will have difficulty doing a comprehensive search on first action. Furthermore, the examiner will have difficulty anticipating what might be claimed in the future, if the initial claim set is misdirected or overly broad. All of this extends prosecution at everyone’s expense.

9) KEEP INFORMATION DISCLOSURE STATEMENTS MATERIAL: Submit a focused Information Disclosure Statement (IDS). Include in an IDS only those references material to patentability. The citation of references that are not material to patentability does not promote a focused examination. Also, be careful to avoid the repeated citation of the same reference.

10) DRAFT CLAIM SET FROM BROAD TO NARROW: Draft your claim set beginning with the broadest scope to which you feel you are entitled and concluding with the narrowest scope you feel merits protection. A claim set that is graduated in scope from broad to narrow assists the examiner in performing a complete and focused search on first action and can help the examiner anticipate future amendments. A claim set that is merely broad does not assist the examiner in performing a focused search and often leaves the examiner guessing as to what might be claimed after first action. This can lead to piecemeal prosecution and the citation of new art after amendment.

Applicants and examiners both must be committed to compact prosecution in order to achieve the efficiency we all seek. The tips above can assist practitioners and examiners in achieving an early resolution of rights in patent applications and ultimately expedite the issuance of a patent.

Thanks to all who submitted comments which led to the creation of this “Top 10” list. As always, I welcome your comments.